Jay Nuttall

You have won considerable acclaim for your skills as a litigator in the IP space – what is the secret to your success?

When approaching litigation, I try to build the best team for each matter, taking into consideration each team member’s skillset, background and knowledge of the client. We first discuss the details of the case with our client to better understand their key concerns and business goals, and then work to develop a strategic plan and manage expectations throughout the case. By providing each team member with direct client contact and important responsibilities, each individual becomes personally invested in the case’s outcome. In this way, we are able to provide superior service to our clients while producing the best results.

What is your most memorable case to date and what makes it stand out?

Last year, we obtained a US$40-million trial win on behalf of our client, Express Mobile, in a patent infringement case against Shopify. In addition to fighting against numerous defendants, we were up against opposing counsel that had recently reported a multi-year winning streak across dozens of cases. The battle involved multiple claim construction hearings and inter partes reviews, with a trial that was rescheduled multiple times due to covid-19. When the trial finally came, we were able to put forth a compelling argument that resulted in the jury finding for our client on all issues and awarding US$40 million in damages.

Additionally, we recently won a crucial summary judgment motion for our client American Axle & Manufacturing against Neapco that related to patent eligibility (35 USC 101). The district court had previously found the claims unpatentable. We successfully obtained a reversal and remand of that decision at the Federal Circuit after a high-profile split (6-6) Federal Circuit rehearing en banc decision and Supreme Court petition for certiorari. The case is going to trial in January 2024, which was long awaited by American Axle.

Your courtroom experience takes in various IP rights from patents to copyright to trade secrets – how do you adapt your style to take account of the differences in various rights and weave these together into a winning strategy?

Rather than change our style to resolve different kinds of IP matters, we try to achieve our clients’ business objectives, which sometimes means filing cases with different types of claims depending on the tech dispute at issue. Due to our breadth and depth of experience in different areas, we are able to successfully resolve issues for clients, regardless of which kind of IP matter we are addressing.

What are the most critical developments affecting your practice today?

In patent cases, the most common forums are changing due to developments in case law, local standing orders and certain judges’ rules. For example, parties are not filing as many cases in the Western District of Texas since an order was issued in July 2022 to split patent cases between judges in the various divisions. Likewise, there has been a drop in patent litigation filed in the District of Delaware since April 2022, when a judge adopted a new rule relating to disclosure of any party with any interest in a case. 

As a result of these changes, we anticipate an increase in patent litigation matters taking place in an array of different locations. Unfortunately, this will likely lead to judges with little patent experience and limited technical understanding hearing and deciding critical aspects of cases, including claim construction, summary judgment and Daubert and other rulings that will lead to more uncertainty and potentially higher reversal rates on appeal.

Which key court decisions have had the biggest impact on your practice in recent years?

The Supreme Court’s Alice v CLS Bank and Mayo v Prometheus decisions have had the biggest impact on my practice in recent years. The Alice and Mayo decisions on Section 101 have affected every patent case since they were issued and have created a lot of uncertainty and inconsistency in the application of the law. Additionally, the recent Supreme Court Amgen Inc v Sanofi decision will likely have a big impact on the enablement issue in many patent cases for years to come.